In a recent decision involving anonymised parties, the Court of Appeal of L’Aquila dealt with unregistered trade marks and recalled the main principles of prior use, which is one possible defence against infringement allegations.

Italian law does not only protect registered trade marks; it also defends the owners of unregistered signs. Indeed, a party sued for trade mark infringement can defend itself by arguing that the same trade mark (or a similar sign) was previously used to distinguish its activities, even if not registered. 

Background to the case

In the case under comment, the Court of First Instance held that the defendant had used a sign similar to the claimant’s registered trade mark for over 15 years prior to the claimant’s  application to register the mark. The Court of Appeal reversed the decision, providing an interesting overview of trade mark “prior use”.

Relevant law

Article 2571 of the Italian Civil Code allows the continued exploitation of an unregistered trade mark which is used prior to the subsequent registration of the mark by another party. Article 2 of the Italian Intellectual Property Code formally provides protection in favour of “the signs different from the registered trade mark” and Article 12 states that a sign can constitute invalidating prior art (for the purposes of a subsequent application to register the mark) if it is well-known beyond a local context. 

The unregistered trade mark can therefore be an alternative to the registered one, but it is necessary to pay close attention to the peculiarities of this institution. 

The Court of Appeal’s decision

The Court of Appeal of L’Aquila recounted the following fundamentals:

1. “an unregistered trade mark, in order to constitute an invalidating prior art of the later registered trade mark, must first have been actually pre-used as a trade mark for the relevant products; second, the prior use must be characterised by not only local reputation; finally, the actual use of the sign must have been homogeneous and constant over time; consequently, the use must not be sporadic, casual, occasional and not continuous” (Court of Bologna, no. 159 of January 16, 2018);
2. “protection of an unregistered trade mark relies on its distinctiveness due to public notoriety and therefore requires its actual use, with the consequence that the same protection cannot be enjoyed in relation to distinctive signs of a business activity never (or for a long time not) practiced by the alleged owner” (Italian Supreme Court, no. 9889 of May 13, 2016).

Only prior use that meets these requirements is deemed worthy of protection and can be claimed against a subsequent registered trade mark. It is therefore essential, for the party seeking to enforce its unregistered rights, to continue to use its unregistered trade mark and to provide adequate evidence of the genuine use made of that sign in the past, not only at a local level. Use must be continuous and uninterrupted.

The Italian Judges upheld the claimant’s case that the defendant had infringed the registered trade mark because the defendant only provided evidence of the use of its unregistered trade mark for a narrow period, and not the entire 15 years prior to registration by the claimant.

Comment

To successfully rely on the prior use of an unregistered trade mark as a defence to infringement, the defendant must produce comprehensive evidence of its use for the entire period of prior use. Preventing the registration of your unregistered trade mark by a third party is even more burdensome; it is necessary to obtain a qualified notoriety, that is to say, you have used that sign for a significant period of time and in a rather large territory, thus making the trade mark sufficiently known to the public.

The protection of unregistered trade marks is an interesting option offered by the Italian legal system, however it sets a particularly significant burden of proof. Therefore, registering your sign is always recommended to avoid investing resources in an (unregistered) trade mark without having any real assurance that it will be protected.

The full judgement can be read here.